Thursday, March 8, 2012

In a Motorola filing in the Northern District of Illinois, I discovered a statement indicating that individuals who write to companies defending themselves against patent infringement claims may actually identify prior art that those defendants, despite their vast resources, weren't able to find on their own but considered useful enough to present them in court.

I previously heard of "crowdsourcing" in connection with prior art search. Last year, I recommended participation in Article One Partners' search for prior art that could be used to invalidate patents held by Lodsys, a non-practicing entity targeting many companies, including dozens or, more likely, hundreds of little app developers. Article One Partners also launched a program called Litigation Avoidance (targeting patents of questionable validity ahead of litigation), and Microsoft was first to sign up. Besides Article One Partner's organized crowdsourcing (with bounties sponsored by companies that have an interest in the results), there have been repeated calls for prior art on the Internet, such as on blogs and in discussion boards.

But this is the first time that I see a major player in this industry -- a company that is in the process of being acquired by Google -- formally tell a court of law about prior art contributions from individuals.

Here's the context:

In the Apple v. Motorola litigation in Chicago, six Apple patents and three (standard-essential) Motorola Mobility patents are at issue. The parties' claims (firstly Apple's, then MMI's) will go to trial starting June 11.

A week ago (on March 1, 2012), Motorola filed Supplemental Expert Reports on Validity of U.S. Patent No. 5,946,647 and U.S. Patent No. 7,479,949. Two days ago, Apple brought a motion to strike portions of those reports "because they assert five new prior art references never before raised by Motorola in expert reports, invalidity contentions, or discovery responses" (not even in MMI's February 7, 2012 identification of prior art and defenses). Also, an expansion of prior art references runs counter to the "winnowing" that Judge Richard Posner would have liked to see much more of.

Obviously, there must be some kind of cutoff date in litigation for belated presentations, but at the same time, relevant prior art can contribute to a more just outcome.

According to Motorola's filing, these are the five new prior art references:

"Sidekick" (described as a "device" in MMI's pleading but as a program for MS-DOS in Apple's motion, which is presumably Borland Sidekick, and

the MHonArc computer program for converting mail or news messages into HTML archives

Note that a prior art contention doesn't have to cover exactly what the challenged patent does. It could be close enough to render the patent in question obvious, or it could be part of a prior art combination over which the relevant patent may be obvious.

In my view, the two prior art references that are programs are far more likely to have been identified by independent "individuals" than those references that relate to patents and patent applications. However, sometimes it happens that inventors, or people who worked with them at the relevant time, find out about a patent playing a role in high-profile litigation though some other patent filing predates it and comes fairly close.

Motorola tries to persuade Judge Posner to allow those belated prior art references with the argument that it didn't hold them back for tactical advantage since it didn't previously know about them, despite having conducted what it calls a "diligent search". Motorola then points to its own "further investigations" but also says this:

"In fact, much of the art Motorola has identified was discovered when Apple's allegations against Android recently came to light to the general public, and numerous individuals in the relevant technical fields wrote about prior art invalidating Apple's patents."

I don't mean to discourage anyone or discount anyone's well-meant efforts, but I, too, receive messages (via my contact form and on Twitter) all the time that mentions what people believe to be relevant prior art, and most of the time it's not. I'm sorry to say so, but some of those submitters are so clueless that they think anything that predates the launch of the iPhone is prior art against various Apple patents, though the data tapping patent actually has a priority date in the mid 1990s (it's a Macintosh patent, basically). Others don't look at what the patent claims say but simply base their prior art theories on the titles or abstracts of those patents -- another totally misguided approach.

Let me put it this way: crowdsourcing inevitably comes with a low signal-to-noise ratio. But when some patents take the center stage in high-profile patent litigation and "fanbois" and other interested people become aware of them, there's definitely a possibility that one or two out of countless individuals may identify something that can really make a difference.

In this particular case, it's likely that the ones who helped Motorola (by contacting Motorola directly, or contacting Google or other Android device makers such as Samsung and HTC), were so-called "phandroids" who were worried about the impact of Apple's patent enforcement activities on their preferred platform. But Apple also has a huge community of supporters, and quite a number of those also have technical knowledge combined with the willingness to understand the criteria for prior art and the basic rules of what can help to invalidate a patent. Apple's iOS also faces patent assertions that can affect users. The most notable example is that Motorola has forced Apple to deactivate the push email service of the iCloud (and of its predecessor, MobileMe) in Germany based on a patent that basically covers how the second message of three consecutive messages sent over a communications infrastructure triggers the third one. Just look at the claims of EP (European Patent) 0847654 (B1) on a "multiple pager status synchronization system and method" or its U.S. equivalent U.S. Patent No. 5,754,119. It's very likely that there's some prior art out there somewhere that could be used to take that patent down, even though the patent is relatively old. Motorola is suing Apple over that patent in the United States, so any Apple users there who don't want to see push email disabled may want to volunteer prior art references.

In my opinion, regardless of a person's allegiance it's always a good thing if a patent that shouldn't have been granted in the first place gets invalidated. Even in those huge smartphone patent battles (on which the parties have already spent, at least, several hundred million dollars), input from independent individuals could make a difference because it's very hard, even with a huge budget, to identify prior art that predates some of those relatively old patents. That fact was worth a blog post, I think.

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About Me

Florian Mueller is a former award-winning intellectual property activist with 25 years of software industry expertise spanning across different market segments (games, education, productivity and infrastructure software), diverse business models and a variety of technical and commercial areas of responsibility. In recent years, Florian advised a diversity of clients on the patent wars surrounding mobile devices, and on their economic and technical implications. (In order to avoid conflicts of interest, Florian does not hold or initiate transactions in any technology stocks or derivatives thereof.) He is now developing a game app for smartphones and tablet computers.